The Coca-Cola Company v. COCA-COLA
Claim Number: FA1005001326950
PARTIES
Complainant is The Coca-Cola
Company, Georgia,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cocacolafoundation.us>,
registered with The Registry at Info
Avenue.
PANEL
The undersigned certifies that he has acted independently and impartially
and to the best of his knowledge has no known conflict in serving as Panelist
in this proceeding.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on May 27, 2010; the Forum received a hard copy of
the Complaint on June 1, 2010.
On May 28, 2010, The Registry at
On June 2, 2010, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 22, 2010 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On June 25, 2010, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed James A. Carmody, Esq.,
as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <cocacolafoundation.us> domain name is confusingly similar to Complainant’s COCA-COLA mark.
2.
Respondent does not have any rights or
legitimate interests in the <cocacolafoundation.us> domain name.
3.
Respondent registered and used the <cocacolafoundation.us>
domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, The Coca-Cola Company, is a
widely recognized manufacturer and seller of beverage products. Complainant owns numerous trademark
registrations for the COCA-COLA mark with the United States Patent and
Trademark Office (“USPTO”):
Reg. No. 22,406 issued January 31, 1893;
Reg. No. 238,145 issued January 31, 1928;
Reg. No. 238,146 issued January 31, 1928;
Reg. No. 1,287,644 issued July 31, 1984;
Reg. No. 1,432,152 issued March 10, 1987;
Reg. No. 1,451,756 issued August 11, 1987;
Reg. No. 1,508,297 issued October 11, 1988;
Reg. No. 1,741,955 issued December 22, 1992; and
Reg. No. 1,757,201 issued February 16, 1993.
Respondent, COCA-COLA, registered the <cocacolafoundation.us> domain name on February 12, 2010. The disputed domain name resolves to a
fraudulent phishing website that aims to mislead Internet users into believing
that the site is the official site of Complainant’s foundation and providing
their personal and financial information.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel
to “decide a complaint on the basis of the statements and documents submitted
in accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to Paragraph 14(b) of
the Rules. The Panel is entitled
to accept all reasonable allegations and inferences set forth in the Complaint
as true unless the evidence is clearly contradictory. See Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb.
Forum July 31, 2000) (holding that the respondent’s failure to respond allows
all reasonable inferences of fact in the allegations of the complaint to be
deemed true); see also Talk City,
Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a
response, it is appropriate to accept as true all allegations of the
Complaint.”).
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant owns numerous trademark
registrations for the COCA-COLA mark with the USPTO:
Reg. No. 22,406 issued January 31, 1893;
Reg. No. 238,145 issued January 31, 1928;
Reg. No. 238,146 issued January 31, 1928;
Reg. No. 1,287,644 issued July 31, 1984;
Reg. No. 1,432,152 issued March 10, 1987;
Reg. No. 1,451,756 issued August 11, 1987;
Reg. No. 1,508,297 issued October 11, 1988;
Reg. No. 1,741,955 issued December 22, 1992; and
Reg. No. 1,757,201 issued February 16, 1993.
The Panel finds that such extensive evidence of trademark registration conclusively establishes Complainant’s rights in the COCA-COLA mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of [UDRP] ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant alleges that Respondent’s <cocacolafoundation.us> is confusingly similar to Complainant’s COCA-COLA mark. The only differences between the disputed domain name and Complainant’s mark are the omission of the hyphen and the addition of the descriptive word “foundation” and the country code top-level domain (“ccTLD”) “.us.” The Panel finds that adding a descriptive word like “foundation” fails to prevent a finding of confusing similarity according to Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to [UDRP] ¶ 4(a)(i).”). The Panel also finds the omission of the hyphen is irrelevant in distinguishing between the disputed domain name and Complainant’s mark. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark); see also Ritz-Carlton Hotel Co. v. Club Car Executive Transp., D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark). Finally, the Panel finds the addition of the ccTLD “.us” plays no role in differentiating the disputed domain name from Complainant’s mark. See Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Nat. Arb. Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”); see also Mattel, Inc. v. Unknown, FA 490083 (Nat. Arb. Forum July 11, 2005) (“The domain name [<Barbie.us>] is identical to the trademark “Barbie”, as it uses the trademark in its entirety. The only difference is the addition of the country code “us” which for this purpose is insufficient to distinguish the domain name from the trademark.”). Therefore, the Panel concludes that Respondent’s <cocacolafoundation.us> domain name is confusingly similar to Complainant’s COCA-COLA mark according to Policy ¶ 4(a)(i).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has alleged that Respondent does
not have any rights and legitimate interests in the <cocacolafoundation.us> domain name. The burden shifts to Respondent to prove that
it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when
the Complainant makes a prima facie
case in support of its allegations. The
Panel finds Complainant has made a sufficient prima facie case. Due to
Respondent’s failure to respond to the Complaint, the Panel may assume
Respondent does not have rights or legitimate interests in the disputed domain
name. However, the Panel will examine
the record to determine whether Respondent has rights and legitimate interests
in the disputed domain name according to Policy ¶ 4(c). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb.
Forum Dec. 1, 2004) (finding that because the respondent failed to submit a
Response, “Complainant’s submission has gone unopposed and its arguments
undisputed. In the absence of a
Response, the Panel accepts as true all reasonable allegations . . . unless
clearly contradicted by the evidence.”); see
also Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008)
(“It is well established that, once a complainant has made out a prima facie case in support of its
allegations, the burden shifts to respondent to show that it does have rights
or legitimate interests pursuant to paragraph 4(a)(ii) of the [UDRP].”).
There is no evidence in the record to
conclude that Respondent owns any service marks or trademarks that reflect that
<cocacolafoundation.us> domain
name. Therefore, the Panel finds that
Respondent does not have rights or legitimate interests pursuant to Policy ¶
4(c)(i). See Meow Media Inc. v. Basil,
FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no
evidence that the respondent was the owner or beneficiary of a mark that is
identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept.
3, 2002) (holding that because the respondent did not own any trademarks or
service marks reflecting the <pepsicola.us> domain name, it had no rights
or legitimate interests pursuant to UDRP ¶ 4(c)(i)).
Complainant argues that Respondent is not
commonly known by the <cocacolafoundation.us>
domain name despite the fact that Respondent appears to be identified in the
WHOIS information as “Coca-Cola.”
Complainant contends that Respondent registered the disputed domain name
under the “Coca-Cola” name in order to carry out its purpose to operate a
phishing website at the disputed domain name.
Complainant alleges that Respondent is not associated with Complainant
in any way and that there is no other evidence corroborating that Respondent is
commonly known by the disputed domain name.
Complainant contends, therefore, that the fact that the WHOIS
information lists the registrant as “Coca-Cola” is insufficient to establish
that Respondent is commonly known by the disputed domain name. Accordingly, pursuant to Policy ¶ 4(c)(iii),
the Panel finds that Respondent is not commonly known by the disputed domain
name. See Yoga Works, Inc. v. Arpita, FA
155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was
not “commonly known by” the <shantiyogaworks.com> domain name despite
listing its name as “Shanti Yoga Works” in the WHOIS contact information
because there was “no affirmative evidence before the Panel that the respondent
was ever ‘commonly known by’ the disputed domain name prior to its registration
of the disputed domain name”); see also
Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that
although “the WHOIS information for the <yasexhoo.com> domain name states
that the registrant is YASEXHOO . . . this alone is insufficient to show that
Respondent is commonly known by the domain name.”).
Complainant alleges that Respondent uses the
<cocacolafoundation.us> domain
name in connection with a fraudulent phishing website that attempts to pass
itself off as Complainant’s official foundation website. Complainant asserts that Respondent’s
resolving website makes use of Complainant’s script mark, its red and white
color combination, and its COCA-COLA FOUNDATION seal and mark in an attempt to
deliberately mislead Internet users and induce them to provide their personal
and financial information and send money to Respondent. The Panel finds that Respondent’s efforts to
pass itself off as Complainant in connection with its operation of a fraudulent
phishing website is not bona fide offering
of goods or services according to Policy ¶ 4(c)(ii)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Juno Online Servs.,
Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that
using a domain name in a fraudulent scheme to deceive Internet users into
providing their credit card and personal information is not a bona fide offering of goods or services
nor a legitimate noncommercial or fair use); see also Capital One Fin.
Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding
that using a domain name to redirect Internet users to a website that imitated
the complainant’s credit application website and attempted to fraudulently
acquire personal information from the complainant’s clients was not a bona
fide offering of goods or services or a legitimate noncommercial or fair
use); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007)
(“Because [the] respondent in this case is also attempting to pass itself off
as [the] complainant, presumably for financial gain, the Panel finds the
respondent is not using the <mortgageresearchcenter.org> domain name for
a bona fide offering of goods or services pursuant to [UDRP] ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainant contends that Respondent’s <cocacolafoundation.us> domain name
redirects Internet users seeking Complainant’s online presence to a fraudulent
phishing website designed to solicit and collect Internet users’ personal and
financial information and charitable donations.
Complainant argues that Respondent makes liberal use of Complainant’s
marks, designs, and color schemes to mislead Internet users into believing they
have arrived at a site officially sponsored by Complainant. Complainant asserts that Respondent asks
Internet users to send cash donations to Respondent’s address, enabling
Respondent to profit from its use of Complainant’s mark. The Panel finds that appropriating
Complainant’s COCA-COLA mark in order to attract Internet users to a fraudulent
phishing website for Respondent’s commercial gain illustrates bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Wells Fargo &
Co. v. Mihael, FA 605221
(Nat. Arb. Forum Jan. 16, 2006) (“Complainant
asserts,…that soon after the disputed domain name was registered, Respondent
arranged for it to resolve to a web site closely resembling a legitimate site
of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the
purpose of which is to deceive Complainant’s customers into providing to
Respondent their login identification, social security numbers, and/or account
information and Personal Identification Numbers…. The Panel finds that Respondent’s behavior,
as alleged, constitutes bad faith registration and use of the subject domain
name pursuant to [UDRP] ¶ 4(a)(iii).”); see
also Wells Fargo & Co. v.
The Panel finds
Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cocacolafoundation.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 30, 2010
Click Here to
return to the main Domain Decisions Page.
Click
Here to return to our Home Page